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Change in the procedure for approving the text intended for grant at the EPO

Under present practice, once the EPO Examining Division considers that an application is ready to proceed to grant, it issues a communication under Rule 71(3) EPC with the text proposed for grant and invites the applicant to:

approve the text;

file a translation of the claims into the two other official languages; and

pay the fee for grant and publishing.

The text to be approved may comprise amendments made by the Examining Division to the description, claims and/or figures. These amendments should be of a nature acceptable to the applicant. For example, the Examining Division may adapt the description to bring it into line with the allowed claims.

It may however be the case that the amendments introduced by the Examining Division are not acceptable to the applicant. For example, a proposed amendment may not have basis in the application as filed and thus be considered to introduce new matter to the application.

It is thus recommended to check carefully any amendments made by the Examining Division before approving the text proposed.

It may also be the case that the applicant wishes to correct a mistake in the text at this stage.

Under present practice, an applicant who disapproves the text proposed by the Examining Division must approve the text on the condition that any amendments proposed by the Examining Division be withdrawn and/or that any requested correction by the applicant be introduced. If the amendments requested by the applicant concern the claims, translations of the claims as amended need to be filed.

The practice should be simplified to some extent upon the entry into force of amended Rule 71 and new Rule 71a EPC on April 1, 2012. These Rules will apply to all European patent applications for which a communication under Rule 71(3) EPC has not yet been issued at that date

Under the new rules, if the applicant disapproves the text proposed, they may submit a reasoned request that the patent be granted on the basis of a different text without the need to file claims translations or pay fees. The Examining Division will then either issue a new communication under Rule 71(3) EPC or, if they disagree with the approved text, resume examination. The same procedure will apply if the applicant had previously filed multiple texts as main and auxiliary request(s) and wishes the patent to be granted based on a higher ranking request than the request allowed by the Examining Division.

This will mean that the applicant is not required to provide multiple translations of the claims, nor to pay the grant and printing fee before an agreement is reached with regard to the text.

These changes are expected to simplify the pre-grant approval procedure before the EPO. However, they also put a further burden on the applicant, as it is now required that any amendment to the text should be reasoned. It remains to be seen how this requirement will be interpreted in practice.